Mammut Sports Group AG & Mammut Sports Group GmbH v Ortovox Sportartikel GmbH – UPC Court of Appeal, 25 September 2024, Case no. UPC_CoA_182/2024
On September 25, 2024, the UPC Court of Appeal upheld the Düsseldorf Local Division’s earlier decision to grant Ortovox Sportartikel GmbH (“Ortovox”) a preliminary injunction (“PI”) against Mammut Sports Group AG and GmbH (“Mammut”), restricting offers for sale and sales of the latter´s Barryvox S2 avalanche search device in Germany and Austria.
The decision covers a range of issues, and provides guidance on how the UPC may approach late filed documents, and the factors to be taken into consideration when determining a PI application.
Background
At the heart of this dispute is Ortovox´s claim that Mammut´s Barryvox S2 infringes its European Patent EP 3 466 498 (“EP ´498”) which pertains to an avalanche transceiver technology designed to enhance the effectiveness of locating buried victims during avalanche emergencies.
EP ´498, granted on October 9, 2017, describes a device equipped with a transmitting unit, a receiving unit, and a control mechanism to manage audio output through speakers. This technology is purportedly vital for efficiently guiding rescuers to avalanche victims by combining various audio signals with spoken instructions.
Mammut exhibited the Barryvox S2 device at a trade fair in Munich which took place between 28 to 30 November 2023. On 1 December 2023, Ortovox sought an ex parte PI, which was awarded by the Düsseldorf Local Division on 11 December 2023. Mammut sought a review of the decision pursuant to Rule 212.3 of the UPC Rules of Procedure (“RoP”), which was upheld.
Mammut appealed.
UPC Court of Appeal decision
Mammut contested Ortovox´s application for a PI on multiple fronts.
Central to its argument was the assertion that Ortovox had unduly delayed in filing for interim measures, thus undermining the urgency claimed by Ortovox. Mammut maintained that any alleged infringement was only recognized much later in the product development timeline and that Ortovox had ample opportunity to seek legal recourse earlier.
Furthermore, Mammut characterized the terms “sound signal” and “voice message” as unclear and contended that the features claimed in EP ´498 were overly broad and did not apply to its Barryvox S2. Mammut also challenged the validity of EP ´498 on the grounds of lack of novelty and lack of inventive step.
In responding to Mammut´s arguments, Ortovox provided a robust defence, emphasizing that it acted quickly following the initial awareness of potential infringement.
Ortovox also argued that the terms “sound signal” and “voice message” in EP ´498 are explicitly defined and should be interpreted as distinct entities. Ortovox asserted that a “sound signal” refers to any acoustic signal relevant to the search for an avalanche victim, which must not be confused with “voice messages” that convey information in spoken form.
Ortovox argued that the technology embedded in Mammut´s ‘Barryvox S2’ mirrors essential patented functionalities, as the device employs mechanisms that allow it to interact with sounds generated by avalanche victims in a manner that closely aligns with the patented design.
Claim construction
The UPC Court of Appeal confirmed the approach to claim construction as set out in its previous decision in 10x Genomics v Nanostring, in which it determined that the claim is the decisive basis for determining the protective scope of the patent, with the description and the drawings used as explanatory aids.
However, while the Düsseldorf Local Division found that the prosecution history could not be taken into account to assist with claim interpretation, the Court of Appeal found that it was not necessary for them to opine on this issue.
Upon reviewing the case, the Court of Appeal underscored that it was essential to consider the evidence from the perspective of a knowledgeable person in the applicable technical field. It dismissed Mammut´s claims that the term “sound signal” was restricted to particular acoustic signals, pointing out that the patent specification clearly indicates that any signal related to the search for a buried avalanche device qualifies as a ‘sound signal.’ This interpretation significantly broadened the scope of protection conferred by EP ´498.
In addressing Mammut´s contention regarding the absence of overlapping functionalities of sound signals and voice messages within its device, the UPC Court of Appeal reinforced the idea that the claim constructs of EP ´498 were clearly intended to incorporate various audio outputs designed to interact adaptively with circumstances surrounding the search for victims. It reiterated that the failure to output a sound signal is not a necessary condition for avoiding infringement if other features of EP ´498, such as the ability to effectively suppress or modulate such signals when speech output occurs, are realized.
Late filed documents
At first instance, the Düsseldorf Local Division had refused to admit one piece of prior art (EP 1 577 679) because it was only submitted one day before the oral proceedings. The Court of Appeal did not determine whether or not the Düsseldorf Local Division’s refusal was wrong, but nevertheless used its discretion to allow it to be admitted. In particular, the Court of Appeal said that as such an exclusion would place a considerable burden on the defaulting party, it would require an express provision for the court to be bound by a rejection of arguments by the lower court. Neither the UPC Agreement nor the RoP contain any such provision.
The Court of Appeal therefore exercised its discretion to decide whether to allow such arguments to be admitted, taking into account (a) whether the submission could have been introduced earlier, (b) its relevance for determining the issues on appeal and (c) the position of the other party with regard to the introduction of new arguments.
On the facts, the Court of Appeal found that admitting the document would not delay the proceedings, and the fact that Ortovox had sufficient opportunity to make submissions in relation to the document during the appeal proceedings supported its inclusion.
Validity
The Court of Appeal undertook a very detailed assessment of Mammut’s invalidity arguments. It adopted the EPO’s approach to assessing novelty pursuant to Article 54(1) EPC, but made no reference to the EPO’s problem-solution approach in its assessment of inventive step.
In this ruling, the UPC Court of Appeal responded to the complexity of the technology at hand, making it clear that the combination of various signalling mechanisms outlined in EP ´498 creates a distinct solution that could not be reasonably derived from existing technologies in the field. Thus, it upheld Ortovox´s claims of novelty and inventive step associated with EP ´498.
Factors relevant to PI assessment
The UPC Court of Appeal determined that it is likely that EP ´498 is valid and infringed, and then considered various factors in deciding whether to grant a PI.
It addressed the timeline of Ortovox´s actions concerning its awareness of the alleged infringement. While it did not give a fixed time period during for their being no delay, it ruled that the timeframe for evaluating claims of unreasonable delay begins from when a patent holder becomes aware of a violation or should reasonably have known about it. In this regard, the UPC Court of Appeal determined that Ortovox did not delay unduly, noting that its actions were timely given the circumstances surrounding the unveiling of Mammut’s device at a trade fair.
The UPC Court of Appeal also considered the implications of granting a PI. It decided that the potential for irreparable harm to Ortovox warranted immediate legal protections. The opinion articulated that the presumption of potential financial loss due to patent infringement does not strictly require evidence of irreparable damage, reiterating that a mere credible threat of such damage is sufficient to justify protective legal measures.
Mammut’s arguments that it would be in the public interest to allow the potentially life-saving devices on to the market were dismissed as other devices are available.
Comment
This decision covers a number of issues, and provided a good analysis of the factors the court should consider when deciding whether to grant a PI. However, it does leave some questions open, notably the role of the prosecution history in claim interpretation, and the approach to assessing inventive step.
What it does do, however, is provide a reminder of the delicate balance in patent law, particularly concerning interim measures that protect patent holders while allowing for competition in a dynamic marketplace. As the case reflects ongoing tensions between innovation and intellectual property rights, it solidifies the position of patent holders in securing their technologies against infringement, thereby promoting continued technological advancement within the industry.
The Court of Appeal undertook a detailed analysis of infringement and validity arguments in its decision. However, the main action concerning infringement and revocation is yet to be heard by the Düsseldorf Local Division. The Local Division’s approach to the issues, particularly in the light of Court of Appeal’s findings, will be watched with interest.
The order (in German) can be found here.
